Panama Supreme Court: Meet the President

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With a postgraduate degree in copyright and related rights, the President of Panama’s Supreme Court of Justice, José Eduardo Ayú Prado Canals, has a head start when dealing with IP cases.

His main responsibilities as President are “to lead the Supreme Court, as well as its Criminal Cases and General Affairs Chamber,” he says.

Before becoming President, he held positions including Circuit Prosecutor, Specialized Prosecutor, and Director of the Judicial Technical Police.

Since 1997, the country of four million people has had two First Instance Courts and one Court of Appeals specializing in solving IP disputes, including trademark-related ones.

The Supreme Court, which handles a variety of cases, has itself ruled on a number of important trademark and IP disputes, but rulings issued by the Court of Appeals are “in most cases final,” so it’s quite rare to have a Supreme Court ruling on these particular cases, he says.

The Criminal Chamber of the Supreme Court does, however, often review cases related to trademark infringement activities. These are mostly acts of counterfeiting that take advantage of Panama’s strategic geographical position and its transport facilities, the President says.

Although most trademark cases in Panama are heard by specialist courts, Mr. Ayú Prado Canals recalls a case decided at the Supreme Court in December 2010.

In the dispute, British American Tobacco (BAT) v. Government of Panama, the Administrative Chamber of the Supreme Court upheld Executive Decree 230, which in part says that tobacco product packages must contain images approved by the Ministry of Health occupying 60 percent of the space designated for the additional health warning.

BAT Panama argued that Decree 230 illegally expanded the scope of Law 13, which takes measures to control tobacco products, in areas that related to smoke-free environments, by banning tobacco advertisements, promotion and sponsorship, as well as enforcement mechanisms.

As a result of this ruling, the Decree “basically limits the ability of tobacco companies to publicly display their trademarks, citing public health issues and the smoking prevention and tobacco control laws.”

Trade Agreement

On October 31, 2012 the Agreement (TPA) entered into force.

The TPA is a comprehensive free trade agreement that eliminates tariffs and removes barriers to U.S. services, including financial services, according to the Office of the United States Trade Representative (USTR) website.

It also includes important disciplines relating to IP, trade, investment, telecommunications, and trade facilitation.

Mr. Ayú Prado Canals says that because of this agreement, “our country had to make several changes to its Industrial Property Law and thus its trademark-related articles.”

These changes were made to facilitate trademark applications, including those for multiclass and nontraditional marks, he explains.

The new law has changed the trademark use concept “in order to grant priority to those who prove trademark use in Panama.”

Under the old law, a party could claim priority by proving trademark use in a foreign country, he says.

On whether the country has any major trademark developments in the pipeline, Mr. Ayú Prado Canals says that the executive branch of Panama is preparing a decree to further regulate IP law.

“That regulation surely will make our country’s trademark legislation more specific and better for trademark holders,” he says.

Foreign Affairs

The Supreme Court has a wide reach and “always” collaborates with foreign authorities.

Mr. Ayú Prado Canals explains that there is a special chamber—the General Affairs Chamber—that handles requests for collaboration after receiving them through “diplomatic channels.”

“We always make our best effort to give a prompt and efficient response to those requests knowing that the preservation of justice is a worldwide value,” he says.

How does the court compare with those in other Latin American countries?

“Panama’s IP laws have undergone major changes in order to meet the requirements of our main trading partner, the United States; it is safe to say that our trademark law complies with international standards and, by doing so, can stand among the best in the region,” says Mr. Ayú Prado Canals.

In the TPA Agreement, Panama also agreed to “make all reasonable efforts” to ratify the Madrid System.

He notes that this step has already been taken by Latin American countries such as Cuba (1995), Colombia (2012), and Mexico (2013).

“There is room to further improve our trademark law by allowing international application filings,” he concludes.

As a country that links Central and South America and is a key conduit for international trade, it’s no surprise that when it comes to IP, Panama is taking a firmly global approach.